1994 Supreme(Del) 392

High Court Of Delhi
WILLIAM GRANT AND SONS LIMITED - Appellant
Versus
MCDOWELL AND COMPAY LIMITED - Respondent
Interim Application 9721 of 1993
Decided On : 05/27/1994

Headnote:Trade Mark - Passing off Action

        Interim induction seeking to restrain the defendant from selling its wisky "Single Malt" under this generic name — label of which is similer in appearence with internationally reputed brand name "GLFNFIDDI- CH which is largest selling malt wisky in the world — dishonest use of trade mark — injuction granted.

       Held:

       Despite looking at the labels which are to be found in Michael Jacksons book "Malt Whisky Companions", reprinted in 1992, I have not been able to locate any single label, for Single Malt Whisky, which has got the same feature of shape, colour, composi corporation and articles which combine to make up the whole of the label, namely, scrolls/ribbons, stag, thistles, in any other label of Malt Whisky. Yet the defendant has taken all the aforesaid features of the label of the plaintiff, namely, the features of shape (the label is not in straight line, but has got various curves and projections), colour and articles like the "Sambhar" with antlers, scrolls on top and bottom of the label, thistles, thecoloring of the stag comprising of golden, brown and black. All this that the defendant has taken, makes one think that the defendant has not done this accidentally, or unknowingly. The same is deliberate. What is deliberate copying, cannot, but be dishonest with intention of bringing forth similarities between the plaintiffs GLENFIDDICH Single Malt Whisky and the Single Malt Whisky of the defendant. In my view, Mr. Sen is right when he refers to and relies upon what is stated by Justice Kekewich in XXIIRPC 273 at page 276," Where you see dishonesty, then even though the similarity were less than it is here, you ought, I think, to pay great attention to the items of similarity, and less to the items of dissimilarity". The defendant appears to have been conscious of the repute of GLENFIDDICH as the largest selling Single Malt Whisky in the world, (as asserted by Michael Jackson in "Malt Whisky Companions), so adopted label of the largest selling Single Malt Whiskhy. the plaintiff has international reputation with regard to its GLENFIDDICH Single Malt Whisky, which it is entitled to protect by instituting a passing of faction, by asserting that noperson should injure its reputation. The plaintiff is entitled to say that GLENFIDDICH is a potable product. It is a liquid. No brand can be put upon the liquid. All that the plaintiff can do, is to label the bottle in which it markets its whisky, and to make sure that its label is distinctive of its product, that its label itself indicates source of the goods, and having done all that, having made the label a distinctive one by incorporating various features which are detailed by me hereinabove. On coming to know of the adoption of the essential features of the plaintiffs label, as has been done by the defendant, the plaintiff is entitled to say that such adoption for a product which the defendant itself admits, does not look like the plaintiffs product, nor docs it taste like the plaintiffs product, would injure its reputation in reasonably forseeable future, if improper use of the label of the defendant is not restrained by an order of injunction.

       the plaintiff has made out a prima facie case that it has a world wide reputation in the GLENFIDDICH whisky, and its label, and that inasmuch as the plaintiff started manufacturing, marketing and selling its whisky all over the world as GLENFIDDICH whisky much prior to the whisky manufactured by the defendant, and the plaintiffs whisky is recognised as the largest selling Single Malt Whisky in the world, the balance of convenience would be in favor of granting an injunction in favor of the plaintiff and against the defendant, so that the defendant is not able to plead that by user of the word "Single Malt" in connection with the goods, and the user of the label in connection with its whisky, it has acquired a reputation, and, thereforee, entitlement to use the name "Single Malt" for its whisky or the label, bearing those words which infringe the copyright in the label of the plaint. As the plaintiff has come to Court at an early stage without any reasonable delay, it is entitled to the injunction which has been sought. I am alsoof the view that in view of the fact that the goods in the instant case are potable products, and it is not possible to mark a liquid, p73 and it is only the container in which the liquid is held that can be marked with the label, so as to show a connection in the course of trade, which the plaintiff is doing, and has been doing, it would be difficult to quantify the loss which the plaintiff would sustain if the defendant is permitted to continue to manufacture, market and sell the whisky bearing the infringing label.